Patent Law Weblog
The U.S. Patent and Trademark Office will be hosting a Women's History Month Event "Celebrating Women in Innovation" on March 5, 2019, from 4:00 pm to 5:30 pm (ET) at the USPTO headquarters, Madison Auditorium, 600 Dulany Street, Alexandria, VA. The event will consist of remarks by Secretary of Commerce Wilbur L. Ross, a panel of successful women in innovation, and the dedication of an auditorium.
Those interested in registering for the event, can do so here.
The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled "The Impact of Recent Cases Addressing Patent Term: Insights for Patent Prosecution and Litigation" on March 5, 2019 from 2:00 to 3:00 pm (ET). Jack Brennan of Fish & Richardson, P.C., Jeff Hohenshell of Medtronic, Inc., and Nicholas Mitrokostas of Goodwin Procter, LLP will help patent owners and their counsel navigate both patent prosecution and litigation issues related to patent term by drawing on insights from three recent Federal Circuit decisions: Novartis AG v. Ezra Ventures LLC, Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical, and Supernus Pharmaceuticals, Inc. v. Iancu. The panel will consider and analyze:
• Strategies for obtaining PTA/PTE at the USPTO, including deciding which of multiple patents covering a product are best suited for PTE
• How to try to avoid terminal disclaimers
• Options for applicants with pending patent applications
• The remaining threat of double-patenting challenges in litigation
The registration fee for the webinar is $135 (government and academic rates are available upon request). Those interested in registering for the webinar can do so here.
J A Kemp will be offering a webinar entitled "Practical Tips on Patent Prosecution in India and China" on March 12, 2019 from 3:30 to 4:30 pm GMT (Greenwich Mean Time). Amanda Simons, Ravi Srinivasan, and Tom Carver of J A Kemp will provide some practical tips on prosecuting patent applications in two important jurisdictions, India and China, consider some recent and up-coming changes in the laws of both states, and also discuss the current picture for those involved in litigation in China. The webinar will address the following topics:
• Patentability requirements in India
• Compulsory licensing
• Indian National Biodiversity Act
• Progress relating to post-filed data in China
• Proposals for term extension and data exclusivity in China
• Recent Changes in Chinese Litigation practice
Those wishing to register can do so here.
Strafford will be offering a webinar entitled "Obvious-Type Double Patenting and PTEs After Breckenridge Pharmaceutical and Ezra Ventures LLC Decisions" on March 14, 2019 from 1:00 to 2:30 pm (EDT). Thomas L. Irving, Adriana L. Burgy, and Jill K. MacAlpine of Finnegan Henderson Farabow Garrett & Dunner will guide IP counsel for understanding double patenting, analyze recent court treatment, including two significant Federal Circuit decisions, offer best practices to defeat double patenting rejections and avoid terminal disclaimers, and provide specific language to consider if a terminal disclaimer must be filed. The webinar will review the following issues:
• What is the scope of double patenting?
• How do the two recent Federal Circuit decisions impact the scope?
• What steps can be taken to defeat double patenting rejections?
• What are best practices to avoid terminal disclaimers?
• How can practitioners craft terminal disclaimers with an eye towards patent litigation?
The registration fee for the webcast is $347. Those interested in registering for the webinar, can do so here.
Pracitising Law Institute (PLI) will be offering a webinar on "The Chinese Intellectual Property Framework — Structural Changes" on March 5, 2019 from 1:00 to 2:00 pm (ET). Elizabeth Chien-Hale of CKR Law will focus on some of the most notable changes for 2019: the role and function of the newly merged CNIPA, the establishment of a national IP appeals court within China's Supreme People's Court, and the new, hopefully final amendments, to the Patent Law. The webinar will address the following topics:
• The background information for the new changes to the Chinese IP protection framework
• The legal ramifications of the new changes to the Chinese IP protection framework
• Explanations for what these changes may mean for foreign holders of Chinese IP rights
The registration fee for this webcast is $299. Those interested in registering for the webinar, can do so here.
The U.S. Patent and Trademark Office will be holding a customer partnership meeting of Technology Center 2800, Semiconductor/Memory Workgroup and Printing/Measuring and Testing Workgroup, from 12:00 pm to 4:30 pm (EDT) on March 12, 2019. The meeting will include:
• Review of the new 101 guidance
• Facilitated table discussions with the Technology Center 2800 SPEs and examiners
• Presentation by an external customer (topic TBD)
• An "Ask a SPE anything" panel.
The meeting will be held at the USPTO's Madison Auditorium, 600 Dulany Street, Alexandria, VA. Those wishing to attend the meeting can register here. Additional information regarding the customer partnership meeting, including how to participate via WebEx, can be found here.
Strafford will be offering a webinar entitled "Functional Claiming for Mechanical and Electrical Arts — Surviving 112(f) and Disclosing Functional Basis to Meet Heightened Standard of Review" on March 7, 2019 from 1:00 to 2:30 pm (EST). Doris Johnson Hines of Finnegan Henderson Farabow Garrett & Dunner and Theresa Stadheim of Schwegman Lundberg Woessner will guide IP counsel on functional claiming in electrical and mechanical arts patents and USPTO prosecution, examine recent court treatment, and how to navigate the issue of functionality given the uncertainties in the context of prosecution and litigation. The webinar will review the following issues:
• What are the risks of a 112(f) interpretation for the patentee?
• What is sufficient structure for supporting 112(f) claims?
• What are best practices for drafting specifications to support functional claims?
The registration fee for the webcast is $347. Those interested in registering for the webinar, can do so here.
By Kevin E. Noonan —
One of the criticisms of the post-grant review proceedings instituted under the Leahy-Smith America Invents Act (post-grant review, inter partes review, and covered business method review) was the (relative) unavailability of pursuing amendments during the proceedings, making them "all or none" propositions for patent owners. The Federal Circuit improved this situation in its en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). Earlier this month, the Federal Circuit took another step in the process of making amendments more frequently considered in IPRs in Sanofi Mature IP v. Mylan Laboratories Ltd.
The case arose in an IPR over U.S. Patent No. 8,927,592, directed to methods for treating prostate cancer, and particularly metastatic cancer resistant to traditional treatment regimens. The challenged claims in the '592 patent (claims 1-5 and 7-30) were directed to treatment regimens comprising a combination of a cabazitaxel (an antitumor agent) and a corticoid. In the IPR, Sanofi filed a motion to amend its claims by adding the italicized limitations to proposed new claim 31 (corresponding to original claim 27):
31. A method of increasing survival comprising administering to a patient in need thereof (i) an antihistamine, (ii) a corticoid, (iii) an H2 antagonist, and (iv) a dose of 20 to 25 mg/m2 of cabazitaxel, or a hydrate or solvate thereof, wherein said antihistamine, said corticoid, and said H2 antagonist are administered prior to said dose of 20 to 25 mg/m2 of cabazitaxel, or hydrate or solvate thereof, in combination with prednisone or prednisolone, wherein said patient has castration resistant or hormone refractory, metastatic prostate cancer that has progressed during or after treatment with docetaxel.
The Board invalidated the challenged claims for obviousness, and Sanofi did not challenge this decision on appeal. The Board denied Sanofi's motion to amend (which was the basis of this appeal), based on its determination that Sanofi had not shown that the amended claims were patentable. In making this decision, the Board construed the amended claim language in the preamble: "[a] method of increasing survival." Sanofi argued that this language was limiting, as a "statement of intentional purpose for how the method is to be performed," in reliance on the Federal Circuit's decision in Jansen v. Rexall Sundown, Inc., 342 F.3d 1329, 1333 (Fed. Cir. 2003). The Board rejected this argument, applying the Federal Circuit's decision in Bristol–Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1375–78 (Fed. Cir. 2001). In that case, the Court held that "a method of treatment preamble stating the intended purpose of the treatment does not impose a result limitation on the recited method step." Because the Board found the survival preamble not to be limiting, the Board dismissed Sanofi's argument on the merits that the prior art did not "disclose or suggest" that the combination of cabazitaxel and prednisone and prednisolone would increase overall survival. The Board rejected other arguments not relevant to the Court's decision, and this appeal followed.
The Federal Circuit vacated the Board's decision and remanded for reconsideration of the motion to amend claims, in an opinion by Judge O'Malley, joined by Chief Judge Prost and Judge Stoll. Citing Aqua Products, the panel recited the fundamental principle that "the petitioner bears the burden of proving that proposed amended claims are unpatentable." The Board (a creature of the PTO) imposed this burden on Sanofi, using the generic requirement that a party before the Office (whether an Examiner or the Board) has the burden of showing that an amended claim is patentable. Mylan contended that this error was harmless because they had established that the proposed amended claims were unpatentable. The panel was unconvinced on the record. Accordingly, the opinion stated that "[w]e therefore decline to speculate as to how the Board would resolve this case under the correct legal standard," citing several post-Aqua cases coming to the same decision under similar circumstances in those cases.
The Court also rejected Mylan's argument that Sanofi had waived its opportunity for a remand because it had not requested rehearing before the Board, saying that Sanofi was not required to request rehearing based on In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1377 (Fed. Cir. 2016), and the plain language of the appeal statute, 35 U.S.C. § 141(c). Finally, the panel rejected Mylan's argument for "administrative exhaustion."
Turning to the PTAB's claim construction, the opinion asserts a de novo standard of review with all factual determinations reviewed for substantial evidence, based on PPC Broadband, Inc. v. Corning Optical Commc'ns RF, LLC, 815 F.3d 747, 751 (Fed. Cir. 2016). Under this review standard, the Federal Circuit held the Board erred in holding that the preamble language was not limiting, based on its Jansen decision and Rapoport v. Dement, 254 F.3d 1053 (Fed. Cir. 2001). And in a footnote, the panel indicates that its decision was based on the "broadest reasonable interpretation" standard applied by the Board. It may be instructive to consider the preambles in these prior cases for comparison with the preamble in Sanofi's proposed amended claim 31:
Rapoport:
A method for treatment of sleep apneas comprising administration of a therapeutically effective regimen of a Formula I azapirone compound . . . to a patient in need of such treatment.
For this claim the Federal Circuit found the "method of treatment" term in the preamble to be limiting because without it, the phrase "a patient in need of such treatment" would have no antecedent basis. Applying this reasoning to the case at bar, the Federal Circuit held that the "method of treatment" term was limiting because "the method–administering a certain compound–must be practiced to achieve the purpose stated in the preamble."
Jansen:
A method of treating or preventing macrocytic megaloblastic anemia in humans which anemia is caused by either folic acid deficiency or by vitamin B12 deficiency which comprises administering a daily oral dosage of a vitamin preparation to a human in need thereof comprising at least about 0.5 mg. of vitamin B12 and at least about 0.5 mg. of folic acid.
Similarly, the Court's decision that the preamble in the Jansen claim was limiting supported the decision here that the "method of treating" preamble was limiting because "it articulated the 'purpose for which the method must be performed,'" i.e., "increasing survival."
Analogizing the preamble in the Sanofi claim in light of this precedent, the Federal Circuit concluded the PTAB had erred in finding Sanofi's preamble not to be limiting. The panel also found support for this construction in the '592 specification, which contained an Example and other disclosure relating to increasing patient survival as an important feature of the claimed invention. In contrast, the Federal Circuit was unpersuaded by Mylan's arguments that Bristol-Myers Squibb (where the preamble was held not to be limiting) was more compelling precedent, because in that case "the claim language 'strongly suggest[ed] the independence of the preamble from the body of the claim'" whereas here the claim language suggested the opposite to the panel. And the Court also rejected Mylan's argument that the prosecution history of the '592 patent supported its position, saying that "Mylan conflates concepts of curing cancer or sending it into remission with longer survival while the cancer remains intact."
Because the Board erred in its claim construction, and procedurally in imposing the burden of patentability improperly on the patent owner, the Court vacated the PTAB's claim construction and remanded for further consideration based on the Court's claim construction.
The opinion also included an interesting footnote regarding the Board's claim construction:
To the extent the Board disregarded Jansen simply because it was on appeal from a district court, '592 Decision, 2017 WL 4221400 at *30 ("Jansen is distinguishable from the present case because it was an infringement case . . . ."), it erred. Claim construction standards vary between district court litigations and inter partes reviews, but basic principles of construction do not. Cf. Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) [emphasis added].
Sanofi Mature IP v. Mylan Laboratories Ltd. (Fed. Cir. 2019)
Nonprecedential disposition
Panel: Chief Judge Prost and Circuit Judges O'Malley and Stoll
Opinion by Circuit Judge O'Malley
By Kevin E. Noonan —
Legal creativity in argument is the lifeblood of the litigator's craft, and nowhere more than in patent litigation in view of the complexities of the law applied to technological fact. But occasionally creative arguments can be a bridge too far, which was the case regarding a claim of sovereign immunity by plaintiffs in University of Florida Research Foundation, Inc. v. General Electric Co.
The case arose over patent infringement brought by the University of Florida Research Foundation (UFRF) against General Electric (GE) over U.S. Patent No. 7,062,251 regarding automated (computer) management of critical care physiologic data (collected bedside for critically ill patients). GE, unsurprisingly, filed a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6), on the grounds that the claims (see below) were invalid for being ineligible for patenting under Alice Corp. Party Ltd. v. CLS Bank International, 573 U.S. 208 (2014). The District Court granted the motion and UFRF appealed.
The Federal Circuit affirmed, in an opinion by Judge Moore joined by Chief Judge Prost and Judge Wallach. Before reaching the merits, the panel opined on UFRF's argument that GE was barred under the Eleventh Amendment from moving for dismissal because UFRF was an arm of the State of Florida and thus enjoyed sovereign immunity against GE's Section 101 challenge. As pithily put by Judge Moore, the Court's response to this argument was: "We do not agree." Sovereign immunity under the Eleventh Amendment can be waived, said the panel, and one way for such waiver is to bring a patent infringement action, citing Regents of the Univ. of N.M. v. Knight, 321 F.3d 1111, 1124 (Fed. Cir. 2003) (citing Clark v. Bernard, 108 U.S. 436, 447 (1883)), and Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1564–65 (Fed. Cir. 1997). The Federal Circuit expressly rejected UFRF's argument that "defenses" to a patent infringement allegation were limited under 35 U.S.C. § 282(b) to § 102 and § 103 challenges, citing the Court's decision directly to the contrary in Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1330 n.3 (Fed. Cir. 2012). The panel also rejected UFRF's argument that the Supreme Court had "undermined" Dealertrack in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 137 S. Ct. 954 (2017), saying that "[u]nlike laches [the subject of the SCA Hygiene decision], which conflicts with the statute of limitations set forth in § 282, treating a § 101 eligibility challenge as a defense to a claim of patent infringement poses no conflict with § 282 and, thus, no risk of 'jettison[ing] Congress' judgment'" (emphasis in opinion). The opinion also notes that both the Federal Circuit's own precedent and that of the Supreme Court had long recognized that § 101 was a "condition for patentability" along with § 102 and § 103, citing inter alia Graham v. John Deere Co., 383 U.S. 1, 12 (1966), and Aristocrat Techs. Austl. PTY Ltd. v. Int'l Game Tech., 543 F.3d 657, 661 (Fed. Cir. 2008) (as well as, with particular relevance to the merits, Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75−76 (2012)). It was an easy task for the Court to hold that UFRF had waived sovereign immunity in this case.
On the merits, this is a garden-variety, § 101 subject matter eligibility opinion. Claim 1 of the '251 patent is representative:
1. A method of integrating physiologic treatment data comprising the steps of:
receiving physiologic treatment data from at least two bedside machines;
converting said physiologic treatment data from a machine specific format into a ma- chine independent format within a computing device remotely located from said bedside machines;
performing at least one programmatic action involving said machine-independent data; and
presenting results from said programmatic actions upon a bedside graphical user interface.
Applying the Alice two-step framework the panel held that under the first prong the claim was directed to a patent-ineligible abstract idea, "collecting, analyzing, manipulating, and displaying data" in agreement with the District Court. Using the language of the '251 patent against the claims the Court easily held that there was nothing that rescued the claim from § 101 subject matter ineligibility:
On its face, the '251 patent seeks to automate "pen and paper methodologies" to conserve human resources and minimize errors. This is a quintessential "do it on a computer" patent: it acknowledges that data from bedside machines was previously collected, analyzed, manipulated, and displayed manually, and it simply proposes doing so with a computer. We have held such claims are directed to abstract ideas. See, e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (holding abstract claims "directed to . . . collecting, displaying, and manipulating data"); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016) (holding abstract claims directed to "collecting information, analyzing it, and displaying certain results of the collection and analysis"). That the automation can "result in life altering consequences," '251 patent at 1:54−56, is laudable, but it does not render it any less abstract.
The panel found nothing in the '251 patent that identified and "specific improvement to the way computers operate" such as was found in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). The very generality used to avoid unduly limiting the scope of the invention became in the Court's hands evidence that there was nothing analogous to the improvement in computer function that the Court held sufficient to avoid invalidation in Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017) (eliciting another "We are not persuaded" from Judge Moore). The distinction is that here the claimed components UFRF attempts to rely upon are "described in purely functional terms" (emphasis in opinion) in both the specification and claims, without providing any "technical details for the tangible components." Accordingly the Court held that "at Alice step one that representative claim 1 is directed to the abstract idea of 'collecting, analyzing, manipulating, and displaying data.'"
Nor did anything in the '251 specification or claims satisfy the requirement in step 2 of the Alice calculus that the claims recite something more than what was "well-understood, routine, [and] conventional." UFRF's assertion of BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) was (consistently) unpersuasive to the panel, for failing to show any technical improvement over the prior art (fatally, reciting the use of a general-purpose computer for "collecting, analyzing, manipulating, and displaying data"). Under these facts, the Court readily affirmed the District Court's invalidation of the '251 patent for failure to claim a patent-eligible invention under § 101.
University of Florida Research Foundation, Inc. v. General Electric Co. (Fed. Cir. 2019)
Panel: Chief Judge Prost and Circuit Judges Moore and Wallach
Opinion by Circuit Judge Moore
Web Page Creation Patents Found to Be Directed to Patent Eligible Subject Matter
By Joseph Herndon —
Two related patent cases Express Mobile, Inc. v. Code and Theory LLC and Express Mobile, Inc. v. Pantheon Systems Inc. within the U.S. District Court for the Northern District of California each involve allegations that the various Defendants infringe U.S. Patent Nos. 6,546,397 (the '397 patent) and 7,594,168 (the '168 patent), which share the same specification.
Defendants in these two actions moved to dismiss, contending that the patent claims are drawn only to abstract ideas, ineligible for protection under § 101 of the Patent Act, as explained in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014), and its progeny. The Court, however, found that the patents described a novel technological solution, and that Defendants' characterization of the patents as claiming only an abstract idea failed. Thus, the motions to dismiss were denied.
The patents relate to building web pages. The inventive methodology described in the patents involves building a web page by defining it as a set of user-selected "objects" and/or "settings." The result is not a markup language code file for the web page, but instead a collection of user selected objects and object attributes. These can be saved in a database, for ease of access and efficient storage. Because complete code files for each page do not need to be stored, the page structure—the full HTML code itself—is created on the fly each time the page is loaded in a user's Web browser. This is achieved in part through a browser-appropriate "run time engine" and related files.
Prior methods for building web pages included either programming directly in HTML or JavaScript code, or using a visual editor that output HTML formatted files. These approaches allegedly were cumbersome and inflexible, in various respects.
Claim 1 of the '397 patent is representative of both patents for purposes of the Alice analysis. It provides:
A method to allow users to produce Internet websites on and for computers having a browser and a virtual machine capable of generating displays, said method comprising:
(a) presenting a viewable menu having a user selectable panel of settings describing elements on a website, said panel of setting being presented through a browser on a computer adapted to accept one or more of said selectable settings in said panel as inputs therefrom, and where at least one of said user selectable settings in said panel corresponds to commands in said virtual machine;
(b) generating a display in accordance with one or more user selected settings substantially contemporaneously with the selection thereof;
(c) storing information representative of said one or more user selected settings in a database;
(d) generating a website at least in part by retrieving said information representative of said one or more user selected settings stored in said database; and
(e) building one or more webpages to generate said website from at least a portion of said database and at least one run time file, where said at least one run time file utilizes information stored in said database to generate virtual machine commands for the display of at least a portion of said one or more web pages.
The Alice court set out a two-step framework for determining patent eligibility. First, a court determines whether the claims at issue are directed a patent-ineligible concept, namely, an abstract idea. If so, the court considers the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application. Step two of this analysis is described as a search for an "inventive concept"—i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.
Express Mobile contended that the patents bring together a number of disparate ideas and concepts, to create a new paradigm for creating, storing, and building web pages.
In contrast, Defendants relied primarily on Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015). They argued that the patents here are not meaningfully distinguishable from one held invalid in that case, U.S. Patent No. 7,603,382, entitled "Advanced Internet Interface Providing User Display Access of Customized Webpages." But the Court found otherwise.
The Court stated that the '382 patent in Intellectual Ventures generally related to customizing web page content as a function of navigation history and information known about the user. The representative claim described a system for providing web pages accessed from a web site in a manner which presents the web pages tailored to an individual user. The Intellectual Ventures court had little trouble concluding that merely tailoring the information presented to a website user based on information about that user or when the website was being viewed represented patent-ineligible abstract ideas.
The sort of information tailoring in the Intellectual Ventures court was considered a fundamental practice long prevalent in our system. Examples given included newspaper inserts often being tailored based on information known about the customer—for instance, a newspaper might advertise based on the customer's location. Providing this minimal tailoring—e.g., providing different newspaper inserts based upon the location of the individual—is an abstract idea.
Tailoring information based on the time of day of viewing was also given as an example of an abstract, overly broad concept long-practiced in our society. There can be no doubt that television commercials for decades tailored advertisements based on the time of day during which the advertisement was viewed.
The Court found that the patents here are not comparable to those in Intellectual Ventures merely because they also involve webpages that reflect information provided by a user. Indeed, the patents do not even involve the same category of user—here the "user" is the person who is trying to create webpages, whereas in Intellectual Ventures the user is a person viewing the webpage to whom customized content will be delivered. The patents here are directed at a purportedly revolutionary technological solution to a technological problem—how to create webpages for the internet in a manner that permits "what you see is what you get" editing, and a number of other alleged improvements over the then-existing methodologies.
The Court found that a more apt comparison to the present patents are those found in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), which reversed a district court's finding of ineligibility under Alice. At issue in Enfish was an innovative logical model for a computer database. Enfish supports the notion that a dividing line can be drawn between patents which merely describe using a computer and/or the internet to carry out pre-existing and well-known tasks and techniques, and those that relate to the functioning of computers themselves. The former will virtually always fail under Alice unless some "inventive concept" can be found in the second step of the analysis; the latter are substantially less easily characterized as merely abstract ideas.
Thus, the Court focused on the claims being directed to a specific asserted improvement in computer capabilities versus a process that qualifies as an "abstract idea" for which computers are invoked merely as a tool. The claims were not found to be directed to tasks for which a computer is used in its ordinary capacity.
The Defendants further argued that any potentially patent-eligible technological improvements set out in the specification were not fully reflected in the actual claims. But the Court stated that dismissal under Alice is not appropriate, at least at this juncture, for such reasons because full claim construction is needed. It simply cannot be said on the present record that the claims are drawn so broadly as to be divorced from the potentially patent-eligible purported technological improvements described in the specification. Accordingly, the Court denied the motions to dismiss, and the patents survived a first challenge in the litigation.
Express Mobile, Inc. v. Code and Theory LLC (N.D. Cal. 2019)
Order Denying Motions to Dismiss by District Judge Seeborg
Patent Docs 